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Wednesday, 27 July 2011

Star Wars, as the IPKat has previously observed, is a science fiction movie franchise which is famous for its sequels. In the same way that life imitates art, so too does litigation. Let the IPKat try to explain

While the House of Lords has
rebranded itself as the Supreme
Court, its judges still seem a
little unworldly to litigants ...

Part I of the Star Wars litigation saga was an action brought in the United States by Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd -- the plaintiffs being the production and licensing companies behind the creation of the Star Wars films and the defendants being, respectively, the man who produced military uniforms for the Star Wars movie and the company he owned. When the plaintiffs first approached Ainsworth in 1976 with a view to him producing some uniforms for use in the film, he was given some drawings and a clay model. He was later hired to produce various items of uniform for the film, and once again he was given drawings of what these items were supposed to look like. After the film was made, Ainsworth kept the molds he had used to create the uniforms and, in 2004, he set up a website from which he started selling replicas, created from the original molds. Once the plaintiffs noticed this, they sued for infringement of copyright under US law and secured a default judgment, Ainsworth taking no active part in the proceedings other than to challenge the jurisdiction of the US court.

On appeal, one must avoid the
temptation to make light of
the other side's arguments

Part II of the saga crosses the Atlantic to the Chancery Division, England and Wales, where the plaintiffs (now 'claimants', since the plaintiffs can't be called 'plaintiffs' in England and Wales in case someone doesn't understand what the word means). The claimants again sued for copyright infringement -- this time under UK copyright law --and also sought to enforce the US judgment or, if the court refused, at least get the British court to determine its claims under US copyright law. In an epic 280-paragraph judgment in Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd[2008] EWHC 1878 (Ch) in July 2008, Mr Justice Mann dismissed virtually every part of the claimants' action, holding that the helmets and other bits of uniform were not copyright-protected: they weren't sculptures, works of artistic craftsmanship or indeed anything else; even if they had been, they were 'design documents' in respect of which, once they were manufactured, unregistered design right and not copyright law would kick in. The only good news for the claimants was that, in Mann J's view, there was no absolute bar against an English court hearing an action to enforce a foreign copyright in respect of infringements that took place abroad. The English courts could, and in appropriate cases should, determine at least the question of infringement of foreign copyright-- and the court should exercise that jurisdiction here. The factual issues in the US action were essentially the same as those arising in the UK, the only specifically US copyright law issue being whether Ainsworth could raise a "functional/utilitarian objects" defence. On the evidence, that defence was bound to fail.

Britain's top judges must
resort to disguise in order
to avoid the adulation
of their admirers

Part III remained in England and Wales, but the litigation was now being conducted above ground level, in the Court of Appeal (Lords Justices Rix, Jacob -- who gave the judgment to which all three judges contributed -- and Patten). That court, whose judgment you can read here,dismissed the claimants' appeal but did allow that of Ainsworth -- in part. As the final paragraph of the 53-page decision concludes:

"There was no copyright in any sculpture. Nor could it enforce its US judgment. Mr Ainsworth’s cross-appeal, on the other hand, partly succeeds and partly fails. It succeeds to the extent that we reject the judge’s direct enforcement of US copyright. In the circumstances, there is no financial remedy for Lucasfilm to compensate it for the modicum of selling which Mr Ainsworth has managed to achieve into the US: but Mr Ainsworth is aware that were he to seek any further selling into the US, he would be in breach of its copyright laws".

Part IV of the saga has gone stratospheric, with an adjudication by the United Kingdom's Supreme Court which, the Court's website tells us, "concentrates purely on the reproductions of the helmet design", it being accepted that Ainsworth has, in the eyes of US law, infringed various US copyrights -- but that it's not accepted that the US law should be enforced in the English courts. This is the first time the recently-rebranded House of Lords has given an intellectual property ruling, so it was not surprising that the judicial line-up was moderately IP-rich -- though not particularly seasoned in copyright matters. The Fab Five are Lord Phillips of Worth Matravers, Lord Walker of Gestingthorpe, Lady Hale of Richmond, Lord Mance of Frognal and Lord Collins of Mapesbury, of whom one (Lord Walker) has served time on the Patents Court and another (Lord Collins) has presided over a pretty robust bit of patent litigation himself.

Unsurprisingly the Supreme Court this morning affirmed the decision of the trial judge and the Court of Appeal that the helmet was not an artistic work, but has reversed the decision of the Court of Appeal that the action based on infringement of copyright in the United States could not be brought before a court in England and Wales. In its 39-page ruling (in full here), Lords Walker and Collins say:

"47. We would uphold the judgments below very largely for the reasons that they give. But (at the risk of appearing humourless) we are not enthusiastic about the “elephant test” in para [77] of the Court of Appeal’s judgment (“knowing one when you see it”). Any zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in
intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power [though Lord Dilhorne must have come pretty close to doing so in his speech in Hensher v Restwawile]. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions.

48. There is one other matter to which the Court of Appeal attached no weight, but which seems to us to support the judge’s conclusion. It is a general point as to the policy considerations underlying Parliament’s development of the law in order to protect the designers and makers of three-dimensional artefacts from unfair competition. After reviewing the legislative history the Court of Appeal took the view (para [40]) that there was no assistance to be obtained from the relationship between copyright and registered design right. We respectfully disagree, especially
if the relatively new unregistered design right is also taken into account. It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with “eye appeal” (AMP Inc v Utilux Pty Ltd [1971]
FSR 572); and under Part III of the 1988 Act a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view,
encourage the boundaries of full copyright protection to creep outwards".

The comments concerning the relevance of design law are, it is submitted, puzzling and unhelpful. If nothing else, they will force litigants in copyright infringement cases to waste time, effort and money delving into policy and legal aspects of the design/copyright interface in the hope of twisting their observations into some sort of plausible support for their respective cases. The Court of Appeal got it right. The Supreme Court did not.

On the issue of justiciability of the claim based on infringement of United States copyright, the Court had this to say:

"87. Two important developments in European law have undermined any argument that there is a substantial policy reason for the view that actions for infringement of intellectual property rights cannot be brought outside the State in which they are granted or subsist.

88. First, article 22(4) of the Brussels I Regulation (formerly article 16(4) of the Brussels Convention) provides that, in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is deemed to have taken place, have exclusive jurisdiction irrespective of the domicile of the defendant. This is an exception to the general domicile rule of jurisdiction, and has to be construed strictly. It applies only to intellectual property rights which are required to be
deposited or registered, and does not apply to infringement actions in which there is no issue as to validity. ...

91. The second relevant piece of European legislation does not apply to the present proceedings because it came into force only on 11 January 2009, but it also shows clearly that there is no European public policy against the litigation of foreign intellectual property rights. Regulation (EC) No 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations (Rome II) applies wherever in the world a tort was committed. It plainly envisages that actions may be brought in Member States for infringement of foreign intellectual property rights, including copyright. Recital (26) states:

Regarding infringements of intellectual property rights, the universally acknowledged principle of the lex loci protection should be preserved. For the purposes of this Regulation, the term ‘intellectual property rights’ should be interpreted as meaning, for instance, copyright, related rights, the sui generis right for the protection of databases and industrial property rights.".

This time the Kat thinks the Supreme Court has got it right in legal terms, and he doubts that this will lead to a sudden rush of US claimants to the British courts.

I guess there was an alternative argument pleaded, that if Ainsworth didn't own the UK copyright then there was no copyright in the material. Which is what the court found.

Outrageous that judges are so out of touch - see para 43. Everyone knows it happens a long time ago in a galaxy far far away ...

43. This is quite a puzzling point. The Star Wars films are set in an imaginary,science-fiction world of the future. War films set in the past (Paths of Glory, forinstance, depicting the French army in the first world war, or Atonement depictingthe British Expeditionary Force at Dunkirk) are at least based on historicalrealities.